‘Shadow judges’ need their roles well defined

By Chiang Ya-chi 江雅綺

The establishment of Taiwan’s first dedicated intellectual property rights court, the Intellectual Property Court (IPC), in 2008 introduced a new system of technical examination officers. These officers are said to be “shadow judges” due to the ambiguity of their status and this affects confidence in the court’s decisions. With intellectual property becoming more important globally, it is necessary to define the officers’ statuses.

Intellectual property lawsuits frequently involve specialized technical knowledge, and in addition to proposing a set of special litigation and trial procedural laws, the IPC, after having looked at the Japanese and South Korean legal systems, introduced technical examination officers to assist judges. On the instruction of a judge, these officers collect and analyze technical information and provide feedback.

According to the Intellectual Property Case Adjudication Rules, written suggestions provided by technical examination officers do not have to be revealed to the parties to a lawsuit. The IPC also stresses that judges direct both cases and rulings, suggestions by technical examination officers only serve as a reference for judges, and the officer’s position is equal to that of a judge’s assistant.

However, in practice, because these officers may question the parties to a lawsuit, although the parties know nothing of interactions between the officer and the judge, parties may feel that the officer acts as a shadow judge, wielding crucial influence over the final ruling.

With the introduction of technical examination officers, the court’s reliance on expert witnesses has dropped sharply, which makes people feel that these officers take on the role of an expert witness. While parties to a case can question the evidence of an expert witness, they have no way to understand the thinking of a technical examination officer and that affects a ruling’s credibility.

Article 8 of the Intellectual Property Case Adjudication Act (智財案件審理法) says: “Before any special professional knowledge already known to the court is adopted as grounds for a judgement, parties shall be accorded an opportunity to present their arguments regarding such knowledge. The Presiding Judge or Commissioned Judge shall direct the parties to issues concerning the legal relations of the disputed matters, and shall, whenever appropriate, provide his legal opinions and disclose conviction.”

The special professional background of the technical examination officers and the analysis they provide to the court could be defined as expert knowledge that is already known to the court, so perhaps parties to a case should be given an opportunity to question the officers, and the officers should be required to disclose and explain their convictions based on the procedural safeguards included in the Code of Civil Procedure (民事訴訟法).

Many of the Supreme Court’s decisions on patent infringements also invoke the same rule, stressing that courts should implement an appropriate procedure for disclosing convictions.

Both the regulations in the Intellectual Property Case Adjudication Act and the intent of the Supreme Court’s rulings are the foundations for allowing the parties to a lawsuit to question a technical examination officer.

The introduction of the officers has had a major impact on intellectual property litigation and it has contributed to litigation efficiency. However, their status is ambiguous and that will affect parties’ confidence in final rulings. This, unfortunately, could have a negative impact on the good intentions behind the establishment of this dedicated court.